Appeal No. 2000-1260
Application 08/518,852
Examiner has provided absolutely no support as to why appellants’
solution would be an obvious choice.” See page 15 lines 23-24 of
the Brief.
In providing motivation or a suggestion to combine, we find
that our reviewing court states in In re Lee, 277 F.3d 1338,
1342-43, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002),
[t]he essential factual evidence on the issue of
obviousness is set forth in Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966) and
extensive ensuing precedent. The patent examination
process centers on prior art and the analysis thereof.
When patentability turns on the question of
obviousness, the search for and analysis of the prior
art includes evidence relevant to the finding of
whether there is a teaching, motivation, or suggestion
to select and combine the references relied on as
evidence of obviousness. See, e.g., McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60
USPQ2d 1001, 1008 (Fed. Cir. 2001) (“the central
question is whether there is reason to combine [the]
references,” a question of fact drawing on the Graham
factors).
We find that the Examiner states on page 4 lines 18-25
of the Answer that,
it would have been obvious to one of ordinary skill in
the art to use a default configuration as taught by
Bertram et al so that a working configuration of the
system can be obtained (Bertram et al col. 7 lines
45-66) and automatically determine . . . [proper
initialization] in order to allow booting of the system
when the user does not know the specific manual indicia
mentioned by Bertram [sic] on cols. 7-8.
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